The International Legal Regime For Biotechnology Patenting: An Appraisal From The Standpoint of Developing Countries

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Revue générale de droit
The International Legal Regime for Biotechnology Patenting: an

Appraisal from the Standpoint of Developing Countries
Jean-Faustin Badimboli Atibasay
Volume 31, Number 2, 2001 Article abstract

The development of biotechnology, which promises many economic
URI: https://id.erudit.org/iderudit/1027794ar opportunities, has revived the debate over the ownership of biological
DOI: https://doi.org/10.7202/1027794ar resources and its derivatives, as well as the sharing of the benefits which
derive from its multiple applications. At the core of the debate, is the recent
See table of contents marriage between intellectual property rights (IPR) and international trade,
within the framework of the World Trade Organization (WTO). In this context,
the need of developed countries to prevent trade distortions due to the lack of
adequate IPR protection in developing countries, is weighed against the need to
Publisher(s)
promote local interests in these countries.
Éditions Wilson & Lafleur, inc. However, the legal impact of recent multilateral agreements, which address
biological innovations, is still subject to controversy. An assessment of these
ISSN instruments reveals divergent approaches to the issues which divide the
parties concerned. This results in ambiguities and conflicts with respect to
0035-3086 (print)
relevant provisions of these agreements.
2292-2512 (digital)
From a wide range of possible solutions discussed, industrial and developing
countries might consider to review the disputed provisions in a way that
Explore this journal
attempts to harmonise the agreements and render legal implications of their
respective initiatives in this area more predictable.
Cite this article

Badimboli Atibasay, J.-F. (2001). The International Legal Regime for
Biotechnology Patenting: an Appraisal from the Standpoint of Developing
Countries. Revue générale de droit, 31(2), 291–325.
https://doi.org/10.7202/1027794ar
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DROIT COMPARE
The International Legal Regime

for Biotechnology Patenting :
an Appraisal from the Standpoint
of Developing Countries
JEAN-FAUSTIN BADIMBOLI ATIBASAY*

Étudiant à la maîtrise en droit
à l'Université d'Ottawa
ABSTRACT RESUME
The development of Uessor de la biotechnologie

biotechnology, which s'accompagne notamment de
promises many economic promesses de prospérité
opportunities, has revived the économique. Ainsi, le débat
debate over the ownership of sur la propriété des
biological resources and its ressources phytobiologiques et
derivatives, as well as the des produits qui en dérivent,
sharing of the benefits which ainsi que le partage des
derive from its multiple bénéfices, est de nouveau
applications. At the core of d'actualité. Il y a lieu
the debate, is the recent d'attribuer la véhémence du
marriage between intellectual débat au lien établi, dans le
property rights (IPR) and cadre de l'Organisation
international trade, within mondiale du commerce, entre
the framework of the World la propriété intellectuelle et le
Trade Organization (WTO). commerce international. C'est
In this context, the need of donc dans ce contexte qu'il
developed countries to faut soupeser les prétentions
prevent trade distortions due des pays développés pour une
to the lack of adequate IPR protection adéquate des
* An earlier draft of this paper was written in partial fulfilment of a Master's

program at the University of Ottawa. I am grateful to professor Mistrale Goudreau
for her assistance in focussing on this interesting topic and for her useful comments.
Of course, I am solely responsible for all the arguments and possible mistakes.
(2001) 31 R.G.D. 291-326

Revue générale de droit (2001) 31 R.G.D. 291-326
protection in developing droits des inventeurs dans les

countries, is weighed against pays en développement, et
the need to promote local ceux de ces derniers pour la
interests in these countries. sauvegarde des intérêts
However, the legal impact of locaux.
recent multilateral Mais seulement, les réponses
agreements, which address apportées à ces prétentions
biological innovations, is still dans les accords
subject to controversy. An multilatéraux en matière
assessment of these d'innovations biologiques,
instruments reveals divergent soulèvent des controverses.
approaches to the issues En effet, on y décèle des
which divide the parties divergences d'approches au
concerned. This results in regard des intérêts des parties
ambiguities and conflicts impliquées. Par conséquent,
with respect to relevant les dispositions pertinentes
provisions of these sont teintées d'ambiguïtés,
agreements. voire de possibilités de
From a wide range of possible conflits.
solutions discussed, Parmi les différentes
industrial and developing solutions examinées, la
countries might consider to révision projetée d'un des
review the disputed accords en question offrirait,
provisions in a way that aux pays concernés, l'occasion
attempts to harmonise the de clarifier les textes, en vue
agreements and render legal de faciliter la prévisibilité
implications of their quant aux conséquences
respective initiatives in this juridiques de leurs initiatives
area more predictable. dans ce domaine.
TABLE OF CONTENTS
Introduction 293
I. Social Economie Implications of Biological Innovations 295

A. Why Link Patent Protection to International Trade? 296
B. Concerns of Inventors for a Strong Patent Regime in Devel-
oping Countries 299
C. The Need to Promote Local Interests and Indigeneous
Rights 302
BADIMBOLI International Legal Regime for Biotechnology 293
II. The Legal Impact of Recent International Agreements 305

A. Plant Patents in the UPOV Convention 306
B. Biotechnology Patenting in the TRIPS Agreement 309
C. Innovations in the Convention on Biological Diversity 314
III. Addressing Conflicts between the International Agreements : Is

there any Way out? 317
A. Where the Agreements Conflict 318
B. Trends and Perspectives 320
Conclusion 324
INTRODUCTION
Biotechnology holds high prospects of improvement in

agriculture, medicine and research. 1 Indeed, it promises to
enhance food resources through genetic engineering, and
make a wide range of products available — crops, fertilizers,
pesticides, drugs, vaccines, and so on. However, despite this
widespread acceptance of the prospective benefits of biotech-
nology, the grant of patents in this area raises some critical
questions. For example, the debate continues as to what
should or should not constitute patentable subject matter, as
well as the possible effects of genetically-engineered organ-
isms on human life and the environment. 2
Therefore, when it comes to international trade, particu-
larly with regard to multilateral agreements, one of the big-
gest issues deals with the protection of Intellectual Property
Rights (IPR) in developing countries. Here, economic and
legal questions tend to prevail over ethical considerations. 3
1. N.D. HAMILTON, "Who owns Dinner : Evolving Legal Rights for Ownership
of Plant Genetic Resources", (1993) 28 Tulsa L. J., pp. 587-657, pp. 689-90, dis-
cussing the benefits of biotechnology.
2. P. BLUNT, "Selective Breeding and the Patenting of Living Organisms",
(1998) 48 Syracuse L. Rev., pp. 1365-1390, pp. 1375-76, discussing the arguments
pro and con the application of genetic-engineering on living organisms.
3. Id., pp. 1375-76, noting that "[t]he risks involved in the development and
the introduction of genetically organisms into the world at large will be balanced
against the expected return on investment [...].
294 Revue générale de droit (2001) 31 R.G.D. 291-326
Seemingly, this is because the issues are raised, for the most
part, in terms which oppose the "haves" and "have-nots", and
the parties ultimately aim either to attain and maintain a
competitive edge on the international market or to meet
development goals. Worth recalling is that one major effect of
IPR is to grant monopoly rights to those who invent new pro-
cesses or products, for a certain period of time before their
inventions are passed on to the public domain. Faced with
this reality, farmers and indigenous communities in devel-
oping countries with huge biological endowments, are
becoming increasingly critical of the patenting of plant vari-
eties and its derivatives. Since biotechnology extends to both
farming and genetic engineering, 4 by promising new eco-
nomic prosperity and industrial uses, it will quite possibly
continue to impact on the political and legal split between
developed nations and developing countries. 5
In this paper we submit that intellectual property law,
as it stands at present with respect to the patenting of biolog-
ical innovations, fails to strike an appropriate balance
between inventors' rights and local communities' rights in
developing countries. This is due to the fact that conflicts still
persist in recent international agreements which have
attempted to address competing interests of the parties
involved. This statement is also based on the assumption that
developing countries are actually willing to exploit their bio-
logical resources; but, they find current international stan-
dards of patentability quite challenging.
Therefore, we start, in Section I, by locating the source of
the current debate in the "customary" link between IPR and
trade, which has been codified in the Agreement on Trade-
Related Aspects of Intellectual Property Rights (TRIPS Agree-
ment). 6 The assessment of the rationale behind this marriage
4. D.S. TlLFORD, "Saving the Blueprints : The International Legal Regime for
Plant Resources", (1998) 30 Case W. Res. J. Int'l L., pp. 373-446, p. 376, arguing that
"[t]oday, biotechnology is helping both farmers and medical researchers sift through
the available genetic options to produce more precisely tailored crops and drugs".
5. Id., p. 397, arguing that the field of biotechnology "promises [...] the battle
over genetic resources".
6. April 15, 1994, [hereinafter TRIPS Agreement], Marrakesh Agreement
Establishing the World Trade Organization, [hereinafter WTO Agreement], Annex IC,
Legal Instruments — Results of The Uruguay Round, vol. 31; 331.L.M. 81 (1994).
then leads us to examine the nature and legal foundations of

complaints made by inventors from developed countries, on
the one hand, and their counterparts in developing countries,
on the other.
In Section II, we look at the way the North-South polit-
ical and legal controversy has been addressed in recent inter-
national legal instruments designed to protect IPR. Moreover,
we pay special attention to the underlying principles as well
as the outstanding drawbacks. Starting with an opening note
on the Paris Convention for the Protection of Industrial Prop-
erty,7 we focus our analysis on the International Convention
for the Protection of New Plant Varieties,8 as well as the afore-
mentioned TRIPS Agreement, and the United Nations Con-
vention on Biological Diversity.9
We concentrate, in Section III, on conflicts between the
various social and political actors; by making a critical evalu-
ation of the relationship between the aforementioned agree-
ments, as well as by discussing recent trends which are quite
possibly laying down new perspectives with respect to the
design of an appropriate law. Therefore, the call for harmoni-
zation in the end, reflects our purpose : we do not intend to
question the legitimate objectives of the agreements, but to
situate them within the context of developing countries'
emerging interests.
I. SOCIAL ECONOMIC IMPLICATIONS

OF BIOLOGICAL INNOVATIONS
The debate over biological innovations involves so many

aspects that it gets somewhat confusing. Although a more rig-
orous approach requires separating what constitutes the IPR
7. March 20, 1883, 21 U.S.T. 1583, 828 U.N.T.S. 305 [hereinafter Paris Con-
vention].
8. December 2, 1961, 33 U.S.T. 2703. This system, which is monitored by the
Union for the Protection of New Varieties of Plants [hereinafter UPOV], has been
amended several times. Recent versions retained for discussion in this paper are
those of 1978 and 1991 [hereinafter UPOV Convention (1978), UPOV Convention
(1991)].
9. June 5, 1992, S. Treaty Doc. N° 103-20 (1993) [hereinafter CBD].
issue from what is not, 10 it seems difficult to ignore the

weight of the socio-economic problem when examining the
relationship between the North and the South; particularly
because the international legal instruments which we will
analyse in the next section, set up a link between patent pro-
tection and international trade. In this section we propose to
examine assumptions that justify the relationship between
IPR and social economic development. We will then provide a
summary explanation of divergent opinions of the parties
involved, with regard to the need to protect biotechnological
innovations.
A. WHY LINK PATENT PROTECTION

TO INTERNATIONAL TRADE?
In any event, three assumptions seem to lay the founda-

tion for a link between IPR and economic development : ade-
quate IPR are beneficial to the developing countries in the
long run, inadequate IPR cause financial losses to industrial-
ized nations' businesses, and constitute a non-tariff barrier to
trade. For example, the idea that IPR can be beneficial to the
economy of developing nations certainly finds widespread
support, 11 but some authors are sceptical about applying a
10. F.M. ABBOT, "Protecting First World Assets in the Third World : Intellec-
tual Property Negotiations in the GATT Multilateral Framework", (1989) 22 Vand.
J. Transnafl L., pp. 689-745, pp. 697-98, arguing that the IPR issue deals with
designing a mechanism to protect intangible wealth transferred from developed
countries to developing countries, therefore, it seems erroneous to base the debate
on the benefits likely to be drawn by developing countries as a consequence of their
cooperation.
11. See generally R.T. RAPP, R.P. ROZEK, "Benefits and Costs of Intellectual
Property Protection in Developing Countries", 24 J. World Trade, pp. 75-102,
pp. 77-81, arguing that the more effectively a country provides patent protection, the
quicker it is likely to achieve economic development (p. 78). To support this assump-
tion, they present an index of patent protection which ranks the level of protection on
a scale of zero to five. Five corresponds to countries that fully comply with minimum
standards proposed in the Guidelines for Standards for the Protection and Enforce-
ment of Patents of the U.S. Chamber of Commerce Intellectual Property Task Force
(p. 79), while zero applies to countries with no patent protection at all. The conclu-
sion, following a "regression analysis" is that Western countries with a strong patent
law experience greater economic development. But see A.S. GUTTERMAN, "The North-
South Debate Regarding the Protection of Intellectual Property Rights", (1993) 28
Wake Forest L. Rev., pp. 89-139, p. 118, n° 207, observing that "the scores were based
solely on the laws as written and did not account for actual enforcement experience".
cause and effect logic in this issue and even assert that the
international patent system is not fit for developing coun-
tries. 1 2 The outcome of the altercation is that developing
countries adhere to the patent system hoping that it will
arguably prompt investments 13 and transfer of technology;14
but, at the same time, they fear "adverse economic conse-
quences for themselves in general and for research and devel-
opment in agriculture in particular". 15 Their reluctance is
further justified by the fact that patents are overwhelmingly
owned by foreigners and "insignificant number of inventions
[are] induced by [the] patent system" in their countries. 16
The second assumption is that North-based firms experi-
ence financial losses due to inadequate IPR protection in devel-
oping countries. Its justification extends from the fact that
counterfeiting is an unfair trade practice, since it prevents
12. A.S. ODDI, "The International Patent System and Third World Develop-
ment : Myth or Reality?", (1987) 5 Duke L.J., pp. 831-878, p. 842, relying on a critical
study by E. Penrose in 1951, according to which "there is no justification for devel-
oping countries to participate in the international patent system". See also
R.J. GUTOWSKI, "The Marriage of Intellectual Property and International Trade in
the TRIPS Agreement : Strange Bedfellows or a Match Made in Heaven?", (1999) 47
Buff. L. Rev., pp. 713-761, pp. 750-51, arguing that "the evidence of successful indus-
trialization of countries in East Asia, particularly the 'four little dragons' (Taiwan,
Hong Kong, South Korea and Singapore), reveals that the recognition of IPR is not
essential to development, despite the rhetoric of developed nations [...] economic and
political reform rather than legal protection of IP may transform underdeveloped
nations".
13. K.W. McCABE, "The January 1999 Review of Article 27 of the TRIPS
Agreement : Diverging Views of Developed and Developing Countries Toward the
Patentability of Biotechnology", (1998) 6 J. Intell. Prop. L., pp. 41-67, p. 64, arguing
aptly that "[p]atent protection acts as a stimulus for investment, not necessarily
because it offers an expectation of increased profits, but rather because it offers a
mechanism to exclude competitors from copying the subject invention". See also R.J.
GUTOWSKI, loc. cit., note 12, p. 758, pointing to "compelling arguments" for devel-
oping countries to benefit from IPR in the long-run; namely the creation of "incen-
tives for domestic and foreign researchers and entrepreneurs to invest resources in
innovative technologies and solutions to problems indigenous to their countries".
14. A.S. ODDI, loc. cit., note 12, p. 855.
15. M.G. BHAT, "Trade-Related Intellectual Property Rights to Biological
Resources : Socioeconomic Implications for Developing Countries", (1996) 19 Ecolog-
ical Econ., pp. 205-217, p. 205; See also K.W. McCABE, loc. cit., note 13, p. 55 :
"[A]ssuming that the developed countries' arguments are correct and that strength-
ened intellectual property protection will stimulate growth, the developing country
will also spend money to develop its infrastructure in order to support the economic
growth predicted by the developed countries".
16. A.S. ODDI, loc. cit., note 12, p. 855.
innovators from reaping investment returns, 17 as well as to

the need for developed countries to keep a competitive advan-
tage on the international market. 18 However, quantification of
such losses is challenged either because of extrapolations,19 or
because the structure of the international economic system
itself is unequal. 20
The last and most important assumption, at least from
the point of view of legal analysis, is that inadequate IPR con-
stitute a non-tariff barrier to trade. That is the reason why, as
Bhat writes, "in the Uruguay Round, IPR was linked for the
first time with international trade to become what is known
as trade-related intellectual property rights", 21 The initiative
came from the United States, in an attempt to stop its com-
petitors from carrying on unfair trade practices. 22 As a result,
the TRIPS Agreement 23 embodies more solidly developed
17. K.W. McCABE, loc. cit., note 13, p. 48, arguing that "biological inventions
are particularly susceptible to piracy because, while they typically require substan-
tial expenditures to develop, they are often simple to replicate",
18. D. HARTRIDGE, A. SUBRAMANIAN, "Intellectual Property Rights : The Issues
in GATT", (1989) 22 Vand. J. Transnatï L., pp. 893-910, p. 895 : "The established
industrialized economies are losing comparative advantage in some traditional sec-
tors and are consciously shifting their attention and resources into areas of greater
comparative advantage-activities that are creativity-, research-, and knowledge-
intensive, and therefore intellectual property-intensive".
19. A well-known example is a report produced in 1986 by the United States
International Trade Commission, dealing with "distortions in U.S. worldwide trade
associated with the protection provided by foreign countries to U.S. IPR". This report
estimated that U.S. companies that responded to the questionnaire lost $23.8 billion
in that year. Extrapolating that figure, it was believed that "worldwide losses to
United States industries in 1986 ranged from $43 billion to $61 billion". See F.M.
ABBOT, loc. cit., note 10, p. 700, commenting on U.S. International trade Commis-
sion, Pub. n° 2065, Foreign Protection of Intellectual Property Rights and the Effect
on U.S. Industry and Trade (1988) (Report to United States Trade Representative).
20. V. SHIVA, Biopiracy. The Plunder of Nature and Knowledge, Boston, South
End Press, 1997, p. 11.
21. M.G. BHAT, loc. cit., note 15, p. 208. However, it should be noted that the
Uruguay Round materialized what was difficult to achieve in the Tokyo Round of
Negotiations. The agreement on counterfeiting in that round failed because there
was no "consensus on its incorporation into the final results of the round, since only
the United States and the European Community were prepared to support it at that
time". See D. HARTRIDGE, A. SUBRAMANIAN, loc. cit., note 18, p. 897.
22. R. ACHARYA, "Patenting of Biotechnology : GATT and the Erosion of the
World's Biodiversity", (1991) 25 J. World Trade, pp. 71-87, p. 72, discussing how the
economic crisis of the 1970s led industrialised countries, namely the United States,
to re-examine competition policies.
23. TRIPS Agreement.
BAD EMBOLI International Legal Regime for Biotechnology 299
countries' concern for a free flow of trade by means of patent

protection. The TRIPS Agreement aims to "reduce distortions
and impediments to international trade, and [...] to promote
effective and adequate protection of intellectual property
rights, and to ensure that measures and procedures to
enforce intellectual property rights do not become barriers to
legitimate trade". 24 From what precedes, it follows that the
positions held by the parties in relation to the protection of
biological innovations diverge considerably. We will now
attempt to examine these issues.
B. CONCERNS OF INVENTORS FOR A STRONG PATENT

REGIME IN DEVELOPING COUNTRIES
To begin with, the biotechnology patenting issue

in developing countries derives from whether biological
resources and its derivatives should be considered as a
common heritage of humanity,25 or as a matter subject to pro-
prietary rights. To this respect, the opinion that prevails in
developed nations is that plant breeders are entitled to
monopoly rights over the products and processes which they
claim as innovations. It is further argued that it does not cost
much for developing countries to provide germplasm, 26 i.e.
raw genetic materials and landraces. In addition, monopoly
rights are the best incentive for research and advancement,
likely to benefit developing countries as well.27
24. Id., preamble.

25. See infra, text accompanying notes 39-42.
26. K. BOSSELMANN, "Plants and Politics : The International Legal Regime
Concerning Biotechnology and Biodiversity", (1996) 7 Collo. J. Int'l Envtl L. &
Pol'y, pp. 111-148, p. 133, commenting on how transnational seed companies put an
emphasis on the fact that industrial breeding techniques involve "highly technical
labor" and "capital input", thus deserving protection. See also G.B. FRISVOLD,
P.T. CONDON, "The Convention on Biological Diversity and Agriculture : Implica-
tions and Unresolved Debates", (1998) 26 World Develop., pp. 551-570, p. 553 and
E. CHRISTENSEN, "Genetic Ark. A Proposal to Preserve Genetic Diversity for Future
Generations", (1987) 40 Stanford L. Rev., pp. 279-321, pp. 299-300.
27. G.B. FRISVOLD, P.T. CONDON, id., p. 553.
It is little wonder that the articulation of political and

legal arguments under the new era of marriage between IPR
and international trade have contributed in reviving tradi-
tional complaints by the biotechnology industry in the North,
particularly in the area of pharmaceuticals. Nogués sum-
marises this as follows : "Industrial countries complain that
the domestic patent regimes of many developing countries
are inadequate because : patent protection is too short; some
industries such as pharmaceuticals are excluded; the legal
enforcement of patent rights is weak; and too much emphasis
is given to compulsory licensing".28
Now that we have pointed out the essential issues, it
might not be unwarranted to refer to a number of important
arguments. Firstly, while in industrial countries long patent
terms allow inventors to recover returns for a period generally
extended to twenty years, in developing countries, on the con-
trary, the term rarely exceeds five years. 29 Though in some
cases the period of protection might be relatively long, exclu-
sion of substances used as food, medicine, or drugs will,
among other factors, weaken such protection, in the second
place. 30 It is worth mentioning that, as a general rule, coun-
tries enjoy discretion to implement policies that aim at pro-
tecting the public interest. Not surprisingly, it took time
before some developed countries accepted to grant patents for
"chemical products" (Germany), "non-medical pharmaceutical
compositions" (France), or "food products" (Austria). 31 Even in
the last decades, some countries like Canada, which share
substantial costs for their health care system, would easily
28. J. NOGUÉS, "Patents and Pharmaceutical Drugs : Understanding Pres-

sures on Developing Countries", (1990) 24 J. World Trade, pp. 81-104, p. 83.
29. A.S. GUTTERMAN, loc. cit., note 11, p. 93.
30. For example, India's patent law in force prior to the TRIPS Agreement
provides 14 years, except for inventions intended to be used as food, medicine or
drug. As Adelman and Baldia note, the latter are subject to seven years from the
filing date or five years from the date of sealing, "whichever is shorter". Again, in the
event of opposition, the patent might expire before the opposition is concluded. See
M.J. ADELMAN, S. BALDIA, "Prospects and Limits of the Patent Provision in the
TRIPS Agreement", (1996) 29 Vand. J. Transnat'l L, pp. 507-533, p. 523.
31. R.L. GANA, "Prospects for Developing Countries under the TRIPS Agree-
ment", (1996) 29 Vand J. Transnat'l L, pp. 735-775, p. 746.
exclude drug products from patentability 3 2 Likewise, it is

argued that such a practice, as carried out in developing coun-
tries, is a deliberate mechanism designed to free-ride high
research and technology-based inventions. 33
Following along the same vein of statutory preclusion,
one further assertion points to the fact that developing coun-
tries allow protection to pharmaceutical processes only, not to
products. As Nogués explains, "[a] process-patent protects the
product only if it is produced with it. Since small modifica-
tions of a formula create many ways of producing a chemical
compound, process-patents are generally viewed as providing
weak protection for pharmaceutical drug companies". 34 By
way of consequence, this results in the proliferation of generic
drugs, creating unfair competition and losses for the biotech-
nology industry from the North. 35
Ultimately, companies from developed countries con-
sider compulsory licensing in developing nations as an intru-
sion into their private rights. An additional drawback is
what is known as "working conditions". With this, developing
countries willing to promote the development of local manu-
facturers, require as a prerequisite to the grant of a patent,
that the invention be used in the country for a specified
period of time 36 or manufactured domestically, instead of
32. R. WEISSMAN, "A Long, Strange TRIPS: The Pharmaceutical Industry

Drive to Harmonize Global Intellectual Property Rules, and the Remaining WTO
Legal Alternatives Available to Third World Countries", (1996) 17 U. Pa. J. Int'l
Econ. L., pp. 1069-1125, p. 1081, discussing the Canadian patent law reform as a
requirement of the North American Free Trade Agreement. See also M.J. ADELMAN,
S. BALDIA, loc. cit., note 30, pp. 510-11, discussing the rationale behind the practice
to exclude certain products from patentability.
33. A.S. GUTTERMAN, loc. cit., note 11, p. 119. See also R.T. RAPP, R.P. ROZEK,
loc. cit., note 11, p. 86.
34. J. NOGUÉS, loc. cit., note 28, p. 83.
35. Id., p. 86, providing a list of 48 developing countries which excluded the
pharmaceutical industry from protection as of 1988. See also M.J. ADELMAN,
S. BALDIA, loc. cit., note 30, p. 525, discussing, for example, the case of Indian compa-
nies which "compete in the international race to exploit the huge generic drugs that
is developing in the West".
36. This first variation of the "working requirement" urges the patent-holder
to use the patent in the market, so that in can effectively benefit the public. Compa-
nies are therefore discouraged from locking up their patents in a way that would
serve anti-competitive purpose. See R. WEISSMAN, loc. cit., note 32, p. 1074.
simply being imported. 37 However, the point of view voiced

by developing countries runs quite opposite to the preceding
arguments.
C. THE NEED TO PROMOTE LOCAL INTERESTS

AND INDIGENOUS RIGHTS
To say that biological resources are a common heritage

as understood by industrial countries, is not a view shared by
developing countries. The potential effect of biotechnology
patenting on consumers on the one hand, and the belief that
it is possible to capitalize on biological resources for local
development on the other, 38 have made developing countries
critical of the current patent system. Their response to the
complaints of patent holders can be stated as follows : the
ownership of biological resources rests with the source
country, the international patent system overlooks the contri-
bution of local communities, and conventional standards of
IPR promoted by developed countries fail to recognize indige-
nous knowledge.
The difference with regard to the principle of "common
heritage", as applied to the ownership of genetic materials,
was well reflected in the 1983 Food and Agriculture Organiza-
tion's (FAO) International Undertaking on Plant Genetic
Resources.39 In this Undertaking, developing countries' opin-
ions prevailed over those of industrial nations. For example, it
was stated that not only raw materials were to be considered
as common heritage of humanity, but also "elite and breeders'
37. Under this alternative, if a pharmeceutical company, for example, sells

imported drugs instead of producing them locally, the patent protection might be
withdrawn, ibid. See also K.W. McCABE, loc. cit., note 13, p. 62, pointing out that if a
patented invention has not been manufactured domestically, a third party can be
granted a compulsory licence to use the patented invention.
38. A.E. CARROLL, "Not Always the Best Medicine: Biotechnology and the
Global Impact of U.S. Patent Law", (1995) 44 Am. U. L. Rev., pp. 2433-2493, p. 2478.
39. International Undertaking on Plant Genetic Resources, FAO Res. 8/83 UN
Doc. 83/Rep (1983) 285 [hereinafter FAO Undertaking].
lines and mutants". 40 This meant that developing countries

could have free access to investment-intensive elite breeding
materials, 41 just as industrial countries enjoy free access to
genetic raw materials from developing countries. Conse-
quently, no wonder the FAO Undertaking could not have any
binding effect. Nevertheless, the concept of a "common heri-
tage" was later on rejected, with the official recognition of
breeders' rights. Also, farmers' rights were agreed upon as
imposing a moral obligation to compensate developing coun-
tries. 42
Thus, the difficulty to reconcile breeders' rights, which
create legal entitlements, with farmers' rights, which are
moral by nature, leads to the equity issue. By means of illus-
tration, the debate that is now extended to biotechnology
inventions in general, started with the seed battle. As a
result, what is at stake, as explained by Kloppenburg, is "the
established asymmetry of germ-plasm flow. Plant genetic
resources leave the periphery as the common — and costless
— heritage of mankind, and return as a commodity — private
property with exchange value [...]".43
Because this argument infers that traditional knowledge
provides no added economic value, local communities can't
40. According to article 2 of the FAO Undertaking, "plant genetic resources"

include the reproductive or vegetative propagating material of:
(i) cultivated varieties (cultivars) in current use and newly developed
varieties;
(ii) obsolete cultivars;
(iii) primitive cultivars;
(iv) wild and weed species, near relatives of cultivated varieties;
(v) special genetic stocks (including elite and current breeders's lines and
mutants) [emphasis added].
41. R.A. SEDJO, "Property Rights, Genetic Resources, and Biotechnology",
(1992) 35 J. L. & Econ., pp. 199-213, p. 200; See also N. ROHT-ARRIAZZA, "Of Seeds
and Shamans : The Appropriation of the Scientific and Technical Knowledge of
Indigenous and Local Communities", in B. ZiFF, RV. RAO (eds.), Borrowed Power.
Essays On Cultural Appropriation, New Brunswick, Rutgers University Press, 1997,
pp. 255-287, p. 266; D.S. TlLFORD, loc. cit., note 4, p. 411.
42. For further discussion, see G.B. FRISVOLD, P.T. CONDON, loc. cit., note 26,
p. 556.
43. J.R. KLOPPENBURG, Jr., First The Seed. The Political Economy Of Plant
Biotechnology. 1492-2000, Cambridge/New York, Cambridge University Press, 1988,
p. 169. See also N. ROHT-ARRIAZA, loc. cit., note 41, pp. 259-60; V. SHIVA, loc. cit.,
note 20, pp. 67-69.
have a share in genetic innovations. Therefore, opponents

from the South state that laboratory applications are a mere
extension of the original knowledge acquired through tradi-
tional breeding systems and centuries of on-field experi-
ence, 44 in pursuit of the same purposes. One well-publicized
example, among others, of appropriation of indigenous knowl-
edge, is the Neem tree found in India and very rich in chem-
ical properties, which is now being exploited by American and
Japanese companies, without sharing the benefits with
farmers. 45
As a result, developing countries contend that they are
unable to promote local communities' interests by complying
with conventional IPR 46 . In addition, despite the "marriage"
between IPR and international trade, the cultural gap with
respect to the conception of IPR can be significant; 47 espe-
cially because in developed countries where patent rights
aim to encourage innovations for technical advancement, and
44. V. SHIVA, id., p. 54 : "[G]enetic engineering and biotechnology only relocate

existing genes rather than create new ones, the ability to relocate and separate is
translated into the power and right to own. The power to own a part is then trans-
lated into the control of the entire organism".
45. V. SHIVA, R. HOLLA-BHAR, "Intellectual Piracy and the Neem Tree", (1993)
23 The Ecologist, pp. 223-227, p. 224.
46. K.W. McCABY, loc. cit., note 13, p. 53, noting that the TRIPS Agreement is
unpolular in developing countries because it impedes the development of self-sustained
pharmaceutical industries. For an illustration see M.J. ADELMAN, S. BALDIA, loc. cit.,
note 30, p. 526, arguing that the protectionist regime set out in India, for example,
aimed at "[s]elf-reliance through an indigenous industry that could break the foreign
companies' stranglehold on both the availability and the prices of drugs".
47. M. BLAKENEY, "Bioprospecting and the Protection of Traditional Medical
Knowledge of Indigenous Peoples : An Australian Perspective", (1997) 19 Euro.
Intell. Prop. Rights, pp. 298-303, p. 300 : "[I]ndigenous peoples do not view their her-
itage in terms of property at all [...] but in terms of community and individual
responsibility. Possessing a song, story or medical knowledge carries with it certain
responsibilities to show respect to and maintain a reciprocal relationship with the
human beings, animals, plants and places with which the song, story or medicine is
connected [...] quoting E.I. DAES, Discrimination Against Indigenous Peoples : Study
On The Protection Of The Cultural And Intellectual Property Of Indigenous Peoples,
(1993) [complete reference omitted in the citation]. But see R.J. GUTOWSKI, loc. cit.,
note 12, p. 754 : "[Tjoday's truly global economy and the paramount importance of
technology and information point to the strong link between trade and IP. Even con-
cerns about ideological imperialism and insensitivity to cultural differences are less
than compelling today given the global movement towards market economies and
free trade".
disclosure in order to facilitate public use of innovations

afterwards, prior publication, for example, destroys nov-
lety.48 Under this condition, it is difficult to protect innova-
tions of indigenous communities, as will be further discussed
in the following section.
II. T H E LEGAL IMPACT OF RECENT

INTERNATIONAL AGREEMENTS
The above sketch of the views of the interested parties

has attempted to demonstrate that the patenting of plant
varieties and its derivatives raises discord because there are
crucial and divergent interests at stake. This has been exem-
plified by the failure of the FAO Undertaking to take IPR-
related issues away from the realm of policy considerations,
in order to enshrine them into an international legally
binding instrument. Noteworthy is that the 1883 Paris Con-
ventions was the first attempt to harmonize the intellectual
property law, but the original text remained mute as to what
constitutes patentable subject matter. Even if the London
revision introduced the term "industrial property" 49 so as to
include the agriculture industry, 50 practice has confirmed the
opinion that the provision in itself is discretionary, rather
than mandatory. 51
Since then, harmonization efforts have been unsuccess-
fully carried out by the World International Property Organi-
zation (WIPO), which monitors the Paris Convention. Because
the WIPO is a United Nations' agency, where developing
countries are majority members, industrial countries are
48. M. BLAKENEY, id., p. 299.

49. See Paris Convention, article 1(3) which reads as follows : "Industrial
property shall be understood in the broadest sense and shall apply not only to
industry and commerce proper, but likewise to agricultural and extractive industries
and to all manufactured or natural products, for example, wines, grain, tobacco leaf,
fruit, cattle, minerals, mineral waters, beer, flowers, and flour".
50. J.J. CAMPBELL, "Effects of International Trends & Agreements on Biotech-
nology Patenting", (1993) 10 Can. Intell. Prop. Rev., pp. 129-143, p. 130.
51. A.S. ODDI, loc. cit., note 12, p. 866, asserting that the matters enumerated
in article 1(3) don't have to be protected; "they are merely protectable" depending on
national legislation [emphasis in the original text].
suspicious about its initiatives, 5 2 precisely in light of its

alleged bias towards the transfer of technology to developing
countries as well as its reluctance to include new plant vari-
eties within the scope of patentable subject matter. 53 Partly
due to this, there have been recent developments in three
important fora,54 with the following agreements : The Union
for the Protection of New Varieties of Plants (UPOV) Conven-
tion, 55 the TRIPS Agreements, 56 and the United Nations Con-
vention on Biological Diversity (CBD)57, We will now examine
how the concerns of the interested parties have been addressed
therein.
A, PLANT PATENTS IN THE U P O V CONVENTION
Created in 1961, the UPOV Convention was conceived to

accomplish what the Paris Convention could not : to protect
the legal rights of breeders. 58 Its successive amendments
have encouraged a market-based system of ratification,
whereby countries are bound only by the provisions of specific
texts. 5 9 This point is important because there are funda-
mental differences between the 1978 text and the 1991 revi-
sion. 60 For this reason, some commentators and interest
groups lament the fact that every revision of the UPOV Con-
vention increases protection for breeders' rights, at the
52. D.G. SCALISE, D. NUGENT, "International Intellectual Property Protec-

tions for Living Matter : Biotechnology, Multilateral Conventions and the Excep-
tion for Agriculture", (1995), 27 Case W. Res. J. Int'l L, pp. 83-118, p. 107. See also
D.S. TlLFORD, loc. cit., note 4, pp. 405-406.
53. Ibid.
54. D.G. DOTSON, "The European Controversy over Genetic-Engineering Pat-
ents", (1997) 19 Hous. J. Int'l L., pp. 919-949, p. 923, arguing that "WIPO has contin-
ually refused to recognize genetically engineered life-forms as patentable subject
matter and has instead relied upon the International Union for the Protection of
New Varieties of Plants".
55. Supraj note 8 and accompanying text.
56. Supra, note 6 and accompanying text.
58. N.D. HAMILTON, loc. cit., note 1, p. 605.
59. Id., p. 607. See also J.J. CAMPBELL, loc. cit., note 50, p. 131.
expense of farmers' rights. 61 A survey of this system reveals

at least three contentious issues which we will now attempt
to discuss.
The first point of contention stems from the difference in
the mode of protection provided respectively in the 1978 and
1991 texts. In the UPOV Convention (1978), member coun-
tries had a choice to protect breeders' rights either by grant of
a special title of protection (a certificate) or by grant of a
patent, but in principe,62 double protection was not allowed.
As for the UPOV Convention (1991), it has removed the pro-
hibition of double protection by providing simply that "[e]aeh
Contracting Party shall grant and protect breeders' rights". 63
Accordingly, developing countries fear that this is likely to
encourage other countries to follow in the footsteps of the
United States by granting plant patents. 64
The second controversial issue is that traditionally,
breeders' rights created a double exception : One, known as
"research exemption", allowed other breeders to use a pro-
tected variety so as to create other varieties, or to market such
new varieties, without paying royalties; 65 the second one,
known as "farmer exemption", permitted farmers to use and
save protected seeds for future production, without paying
royalties. 66 Under the UPOV Convention (1991), breeders'
61. N. ROHT-ARRIAZA, loc. cit., note 41, p. 265; See also GAIA FOUNDATION &
GRAIN, "Ten Reasons Not to Join UPOV. Global Trade and Biodiversity In Conflict",
N° 2 (London/Barcelona, 1998) (visited Dec. 22, 1999) <www.grain.org/publications/
gtbc/issue2.htm>.
62. UPOV Convention (1978), art. 2(1). However, the United States was
excused to apply double protection. It granted breeders' rights under the Plant
Variety Protection Act, 7 U.S.C. §§ 2321-2583 (1970) to "new sexually reproducing
varieties", whereas it granted plant patents for "asexually reproducing plants" under
the 1930 Plant Patent Act, 35 U.S.C. §§ 161-164 (1992); See N.D. HALMILTON,
loc. cit., note 1, p. 595.
63. UPOV Convention (1991), art. 2.
64. As a matter of fact, the European Patent Convention contains a provision
very similar to what is found in the TRIPS Agreement, to be studied below, which
prohibits patents on "plant or animal varieties or essentially biological processes for
the production of plants or animals". This prohibition has been interpreted restric-
tively, as applying only to "varieties per se"; thus, "utility patents can be granted in
cases where claims are not for a variety per se". See N.D. HAMILTON, loc. cit., note 1,
pp. 606-607. For further discussion see infra, note 89 and accompanying text.
65. UPOV Convention (1978), art. 5(3). See also N.D. HAMILTON, id., p. 598,
discussing the scope of these exceptions.
66. N.D. HAMILTON, id., p. 599.
rights have been reinforced,67 while the grant of exemptions

has been left to the discretion of the state authority in each
Contracting party. 68 Accordingly, failure to provide for such
exemptions would entail an obligation to make arrangements
like licencing, for the use of a patented variety in research, or
royalties, for its use in farming.
A third stumbling block is rooted in the fact that stan-
dards of protection have been strengthened in a manner that
makes UPOV a patent-like system of protection. To be protect-
able, a bred variety has to be new, Le. the "propagating or har-
vested material [...] has not been sold or otherwise disposed of
to others"; uniform, that is "in its characteristics"; distinct,
meaning "clearly distinguishable from any other variety"; and
finally, stable, in the sense that "its relevant characteristics
remain unchanged" in successive generations. 69 These condi-
tions are criticized as creating a dichotomy between farmers'
varieties and breeders' commercial varieties. Since the former
can find it difficult to conform with the uniformity and sta-
bility standards, for example, they will eventually be denied
protection.70
Looking at the UPOV system from the angle of devel-
oping countries, and leaving aside its conflicts with respect to
the biotechnology industry, leads one to the conclusion that
this system, especially the UPOV Convention (1991), serves
the interests of industrial countries, but overlooks those of
developing countries. To quote Hamilton, "[t]he greater eco-
nomic protection afforded by patents on plant varieties
explains why this form of protection is favoured by American
biotechnology companies and why the U.S. has promoted
"patenting" of plant varieties in various international trade
agreements". 7 1 With this said, we will now continue our
investigation of the issue under discussion by surveying the
TRIPS Agreement.
67. UPOV Convention (1991), art. 14.

68. Id., art. 15(2). See also D.S. TlLFORD, loc. cit., note 4, p. 407, acknowl-
edging that despite the "optional" grant of exemptions, "[t]he 1991 amendments
serve generally [...] to strengten breeders rights".
69. UPOV Convention (1991), arts. 5; 6; 7; 8; 9.
70. N. ROHT-ARRIAZA, loc. cit., note 41, pp. 265-266.
B. BIOTECHNOLOGY PATENTING IN
THE T R I P S AGREEMENT
The Uruguay round of negotiations has been described as

"[plerhaps the most significant forum for the promotion of the
Northern view of the ownership of plant genetics".72 Indeed, if
one weights its results against the back drop of the concerns
of the interested parties, as discussed in Section I, one might
come to the conclusion that developed countries are the true
winners. For instance, except for the provisions whose appli-
cations are subject to the transitional period, developing coun-
tries can no longer escape from the obligation to protect
patent holders' rights for a period of no less than twenty
years; 73 nor from the requirement to limit such rights only
under certain conditions, 4 even though national legislative
bodies are free to define "the kind and extent" of exceptions to
be granted. 75 In addition, any country willing to resort to com-
pulsory licensing has an obligation to conform to severe
restrictions. 76 However, whether the TRIPS Agreement truly
disfavours developing countries with respect to biotechnology
patenting, is a matter that can be ascertained only if one
examines the substantive provision that deals with the scope
72. M , p . 6 1 3 .
73. TRIPS Agreement, art. 33.
74. Id., art. 30, stipulating that the exceptions to exclusive rights will "not
unreasonably conflict with a normal exploitation of the patent and [will] not unrea-
sonably prejudice the legitimate interests of the patent owner, taking account of the
legitimate interests of third parties".
75. CM. CORREA, "Patent Rights", in CM. CORREA, A.A. YUSUF (eds.), Intellec-
tual Property And International Trade : The Trips Agreement, London/Boston,
Kluwer International, 1998, pp. 189-221, p. 208.
76. TRIPS Agreement, art. 31. The general rule is that compulsory licencing
applies only where the attempt to obtain authorization from the right holder on rea-
sonable commercial terms and conditions proves unsuccessful; unless the demand
concerns national emergency or similar circumstances, in which case the right
holder has to be notified and remunerated, taking into account the economic value of
the authorization. Besides, any decision relating to the authorization can be subject
to a judicial or independent review. See also K.W. MCCABE, loc. cit., note 13, p. 61,
noting the extent of severe restrictions to compulsory licencing; CM. CORREA, id.,
p. 210, pointing out that the flexibility as to the grounds for granting compulsory
licences is subject to the conditions specified by the TRIPS Agreement. M. HALE-
WOOD, "Regulating Patent Holders : Local Working Requirements and Compulsory
Licenses at International Law", (1997) 35 Osgoode Hall L. J., pp. 243-287, p. 263,
noting that compulsory licensing provisions "are definitely more restrictive than was
previously allowed for [...]."
and the conditions for patentability, namely Article 27. We

will start by dealing with the scope of patentable subject
matter before examining the conditions of patentability.
According to Article 27, Section 1, shall be patentable
"any inventions, whether products or processes, in all fields of
technology, provided that they are new, involve an inventive
step and are capable of industrial application". Then follows
the prohibition, in the same provision, of discrimination
regarding the "place of invention", the "field of technology",
and regarding the fact that "products are imported or locally
produced".77 This provision is considered as the major conces-
sion made by developing countries, since it allows no restric-
tion as concerns patentable subject matter. 78 Furthermore, it
arguably tends to put an end to working requirements. 79
In any case, under Section 2 of the same article, it is pos-
sible to exclude from patent protection, certain inventions on
the grounds of ordre public or "morality", when it appears
"necessary" to prevent their "commercial exploitation"; as well
as "to protect human, animal or plant life or health or to avoid
serious prejudice to the environment", except where such pre-
clusion is "made merely because the exploitation is prohibited
by domestic law". 80 This public health clause would appar-
ently allow developing countries, for instance, to exclude some
substances, such as pharmaceutical products, from patent-
ability.81 However, the weight to be attached to this provision
77. TRIPS Agreement, art. 27.1.

78. CM. CORREA, loc. cit., note 75, p. 191, commenting on article 27.1.
79. See discussion supra, notes 36-37 and accompanying text; K.W. MCCABE,
loc. cit., note 13, p. 62, arguing that the TRIPS Agreement "has effectively banned
working requirements". See also R.L. GANA, loc. cit., note 31, p. 756, observing that
"[t]he TRIPS Agreement eliminates the use of working requirements as a condition
to granting a patent". But see M. HALEWOOD, loc. cit., note 76, p. 257, arguing that
"within the TRIPS framework, pursuant to articles 8 and/or 30, a country could leg-
islate local working provisions". Observing however, that "[t]he local aspect of the
working requirement would be limited [...] by the fact that some importing of the
patented subject matter would have to be allowed"; CM. CORREA, loc. cit., note 75,
p. 203, concluding that "article 27(1) would not prohibit local production obliga-
tions!;,] but just the discrimination in the exercise of rights against infringing goods,
whether imported or locally produced".
80. TRIPS Agreement, art. 27.2.
81. R. WEISSMAN, loc. cit., note 32, p. 1100: "Assuming the reason is legiti-
mate, the exception will permit a country to deny patent to a particular drug or to all
drugs".
must be assessed against the conditions laid down for its

application. Firstly, it is stated that the exclusion must be
"necessary"; secondly, it must aim to prevent "commercial
exploitation" of such products; and thirdly, it must not rely
merely on the prohibition of the excluded products in domestic
law. It seems rightful to assume that these limitations are
likely to narrow the permissive language of Article 28.2.82 On
the other hand, this provision does not provide any guidance
as to how it should be construed.83 Therefore, equally reason-
able is the assumption that an attempt to rely on it might be
challenged within the framework of the Dispute Settlement
Body (DSB) of the WTO. With regard to the first paragraph of
Section 3, it is stated that "diagnostic, therapeutic and sur-
gical methods for the treatment of humans or animals", 84 also
fall outside the ambit of patentable subject matter. This, in
any case, runs parallel with preclusion of therapeutic methods
in most countries. 85
Turning our attention to Article 27, Section 3, it starts by
specifying, in the first paragraph, the kind of products and
processes which will not be patentable. These are, "plants and
animals", and "essentially biological processes for the produc-
tion of plants or animals [..J".86 Whether the latter category
82. T.G. ACKERMANN, "Dis'ordre'ly Loopholes: TRIPS Patent Protection,

GATT, and the ECJ", (1997) 32 Tex. Int'l L. J., pp. 489-509, p. 492, discussing the
scope of the exclusions in article 27.2.
83. The problem with the public health clause is two-fold : First, the exclusion
must be "necessary", and second, it must aim to prevent" commercial exploitation" of
the invention in question. Under GATT 1947 case-law, "necessary" has been con-
strued as imposing an obligation on nations to resort to exceptional measures only if
(1) another GATT-consistent measure is not available, and (2) the measure applied is
"least-trade-restrictive". See R. WEISSMAN, loc. cit., note 32, p. 1103. But the latter
test appears to be "favored". See T.G. ACKERMANN, id., p. 507. Thus, Weissman sug-
gests "[a] less stringent reading of "necessary" — something closer to important, and
with little or no attention to available alternative", R. WEISSMAN, id., p. 1107. As con-
cerns "commercial exploitation", it seems that a country would be justified to deny
protection to foreign patent-holders only if commercial exploitation of the invention
by domestic entities is not allowed either, R. WEISSMAN, id., p. 1100. CM. CORREA,
loc. cit., note 75, p. 193; T.G. ACKERMANN, id., pp. 508-509. But how one defines
"commercial exploitation" is quite an other issue. For further discussion of competing
views, see T.G. ACKERMANN, id., p. 509.
84. TRIPS Agreement, art. 27.3(a).
85. CM. CORREA, loc. cit., note 75, p. 194.
86. TRIPS Agreement, art. 27.3(b).
will in effect be excluded remains disputable. For example,

professor Correa has suggested that if it is possible to
interpret the exclusion of "plants and animals" broadly, as
embracing animal races and animal plant species, the same
can not be said about "essentially biological processes". 87
Referring, by way of analogy, to the patent law of the countries
member to the European Patent Convention,88 he argues that
the criteria retained to interpret "essentially biological pro-
cesses" is the degree of "human intervention". 89 As a result,
"classical breeding methods are not patentable. In contrast,
methods based on genetic engineering (e.g. the production of a
'transgenic' plant) where the technical intervention is signifi-
cant, would be patentable". 90 As for "micro-organisms" and
"non-biological processes" it is expressly provided that they
shall be patentable.
Yet another hurdle for developing countries lies in the
second subparagraph of Article 27, Section 3, which deals with
"plant varieties" specifically. This provision mandates Mem-
bers to provide protection for plant varieties "either by patents
or by an effective sui generis system".91 Since this provision
also aims to assure that minimum IPR are provided for in
developing countries, we have kept the discussion for the last
section of this paper. Suffice to say along with professor
Correa that "[t]his obligation is another important basis for
87. CM. CORREA, loc. cit., note 75, pp. 194-195, and by the same author, "The
GATT Agreement on Trade-related Aspects of Intellectual Property Rights : New
Standards for Patent Protection", (1994) 16 Eur. Intell. Prop. Rev., pp. 327-335,
p. 328 [hereinafter, CM. CORREA, "New Standards"].
88. Convention on the Grant of European Patents, Oct. 5,1973,1065 U.N.T.S.
199 [hereinafter, The European Patent Convention].
89. CM. CORREA, loc. cit., note 75, p. 195.
90. The analogy underlying this reasoning seems to be based on the similarity
between article 27.3 of the TRIPS Agreement and article 53(b) of the European
Patent Convention which reads as follows : "European patents shall not be granted
[...] [for] plant or animal varieties or essentially biological processes for the produc-
tion of plants or animals; this provision does not apply to microbiological processes
or the products thereof\ For further discussion of the application of the "human
intervention" standard by the European Patent Office, see W. MOSER, "Exceptions to
Patentability Under Article 53(b) EPC", (1997) 28 Int'l Rev. Ind. Prop. & Copy. L.,
pp. 845-850, pp. 846-849; H.C THOMSEN, "The Exceptions to Patentability Under
Article 53(b) EPC and Corresponding Laws of the EPC Contracting States", (1997)
28 Int'l Rev. Ind. Prop. & Copy. L., pp. 850-857, pp. 852-855.
the expansion of the scope of intellectual property in the field

most developing countries have neglected until now".92
With regard to the conditions of patentability, an inven-
tion must be new, involve an inventive step (non obvious), and
be capable of industrial application (useful). Gana has rightly
called these new standards a "deceptively simple terminology",
contending that they "invoke a body of jurisprudence which
has been carefully developed and applied by courts in devel-
oped countries for years"; and which, insofar as developing
countries are concerned, represent the results of their "acces-
sion to international agreements, rather than the working out
of ideas about the patent system emanating from the indi-
vidual countries".93 However strong this argument might be,
the fact is that these standards hardly apply, if at all, to tradi-
tional breeding methods and indigenous knowledge. This view
is not unsupported if we consider, for example, novelty. The
fact that accounts of the uses of traditional medical remedies
of indigenous communities have been published or used by sci-
entists of all background, is quite well-documented.94 Again,
as many would argue, even if such publication manifestly
destroys novelty and renders such remedies non-patentable, 95
it does not follow that pharmaceutical companies, for instance,
will not be able to use such knowledge or substances in labora-
tory and patent their results. 96
92. CM. CORREA, "New Standards", loc. cit., note 87, pp. 328-329.
93. R.L. GÂNA, loc. cit., note 31, p. 749.
94. M. BLAKENEY, loc. cit., note 47, p. 299, referring to the practice of ethno-
botanists and ethnopharmacologists. See also R. WEISSMAN, loc. cit., note 32, p. 1090,
noting that "corporate botanists and anthropologists rely on third world farmers and
herbalists, especially from indigenous communities that make their home in or live
off of the rain forests, to direct them to plants that they use in local medicines".
95. M. BLAKENEY id., p. 299, arguing that publication "may have the effect of
destroying the novelty of therapeutic claims". See also R.L. GANA, loc. cit., note 31,
pp. 749-750 : "Developed countries are likely to treat such traditional medicines or
cultural knowledge as a product of nature or decide they do not satisfy novelty
requirements".
96. R.L. GANA, id., p. 750, arguing that it is possible for a pharmaceutical com-
pany to "take the raw formula or components of a native medicine and work on it
until it satisfies the patentability requirements". See also R. WEISMAN, loc. cit.,
note 32, p. 1090, asserting that "the pharmaceutical companies are able to synthe-
size chemical substances with mild alterations and patent them".
The preceding review of the TRIPS Agreement points to

the conclusion that the concerns of developed countries have
been given extensive consideration, whereas much remains to
be done with regard to the interests of developing countries.
Of course, there are a few exclusionary provisions, but it can
be argued that their effects have been watered down consid-
erably by somewhat ambiguous underlying conditions.
Besides, the failure to consider farmers' rights or traditional
knowledge of local communities suggests that such concepts
do not fit, as yet, into the current regime of IPR. Now, if it is
true that the TRIPS Agreement has failed to protect the
interests of the latter, the CBD seems to have adopted quite a
different approach.
C. INNOVATIONS IN THE CONVENTION

ON BIOLOGICAL DIVERSITY
The CBD is the most known outcome of the UN Confer-

ence on Environment and Development (UNCED), held in Rio
de Janeiro in June 1992. Many think of it as the major break-
through managed by developing countries, but it is certainly
an attempt to reconcile the interests of the North and those of
the South with regard to biotechnology. Three objectives are
contemplated : "the conservation of biological diversity, the
sustainable use of its components and the fair and equitable
sharing of the benefits arising out of the utilization of genetic
resources". 97 The perception that the CBD meets the expecta-
tions of developing countries is premised on the ownership of
genetic resources, access to technology, and IPR on biological
innovations of indigenous communities.
The point about ownership of genetic resources is that
the principle of "common heritage of humanity" has been
rejected, 98 although some issues remain pending and their
97. CBD, art. 1.

98. See supra, Section I.C. for more on this topic. However, one commentator
argues that the fact that the Preamble to the CBD states that the conservation of
biological diversity is a "common concern of humankind" is meaningful, because
States have now confirmed that biodiversity is a "commons", which entails an obliga-
tion to conserve it. See K. BOSSELMANN, loc. cit., note 26, pp. 137-138.
BAD EMBOLI International Legal Regime for Biotechnology 315
discussion would extend the scope of this paper." Instead, it

is established that States have sovereign rights over their
natural resources, and the authority to determine access to
genetic resources. 100 One is tempted to think that measures
taken in this sense, are limited only by "the aim of sharing in
a fair and equitable way the results of research and develop-
ment and the benefits arising from the commercial and other
utilization of [these] genetic resources". 101 Except that the
same article affirms that "[ajcces [to genetic resources] [...]
shall be on mutually agreed terms", 102 thus creating an ambi-
guity as discussed below.
Next, we will consider the question of access to protected
technology. On this point, the CBD is challenged by its oppo-
nents for stipulating that "[a]ccess to and transfer of tech-
nology [...] to developing countries shall be provided and/or
facilitated under fair and most favourable terms, including on
concessional and preferential terms". 103 Further still, devel-
oped countries "shall take legislative, administrative or policy
measure [...] with the aim that [...] developing countries,
which provide genetic resources are provided access to and
transfer of technology which makes uses of those resources,
on mutually agreed terms, including technology protected by
patents and other intellectual property rights". 104
The history of the CBD itself shows that the language
used in Article 16 was at the core of the United States' initial
refusal to sign the Convention105. It was perceived as focussing
99. A thorny question concerns the retroactivity of the CBD with respect to
germplasm collected from developing countries prior to its entry into force, and held
by International Agricultural Research Centres (IARCs). The text does not shed
light on the ownership of seed banks, but rather gives rise to controversies. For a
discussion, see G.B. FRISVOLD, P.T. CONDON, loc. cit., note 26, p. 558; see also
N.D. HAMILTON, loc. cit., note 1, pp. 630-631.
100. CBD, art. 15.1.
101. Id., art. 15.7.
102. i d , art. 15.4.
103. Id., art. 16.2.
104. Id., art. 16.3.
105. C.R. MCMANIS, "The Interface Between International Intellectual Prop-
erty and Environmental Protection: Biodiversity and Biotechnology", (1998) 76
Wash. U.L.Q., pp. 255-279, p. 262, discussing the Unites States's position with
respect to the CBD.
on IPR "as a constraint to the transfer of technology rather

than a prerequisite".106 No wonder expressions like "equitable
share", "fair and most favourable terms", rapidly triggered the
Unites States' unilateral interpretation of the CBD, in order to
satisfy the demands of the biotechnology industry. 107 Fears
expressed by the latter being that the CBD urges inventors to
transfer technology and disregard compensation; proposes the
sharing of the income; and "creates the potential for sweeping
forfeiture of intellectual property rights". 108
Last, but certainly not least, is the recognition of indige-
nous and traditional knowledge. Article 8(j) calls on each
Contracting party to "respect, preserve and maintain knowl-
edge, innovations and practices of indigenous and local com-
munities embodying traditional lifestyles relevant for the
conservation and sustainable use of biological diversity". It
also requires States to "encourage the equitable sharing of
the benefits arising from the utilization of such knowledge,
innovations and practices".109
With these stipulations, it is expected that equity will
finally find its way into the field of IPR. n o As commented by
106. Id., p. 256, p. 262, quoting the United Nations Convention on Biological
Diversity, in 3 U.S. Dep't St. Dispatch 423 (1992).
107. D.G. SCALISE, D. NUGENT, loc. cit., note 52, p. 112, discussing the text of
Message from the President of the United States Transmitting the Convention on
Biological Diversity, with Annexes, Done at Rio de Jan[ei]ro June 5,1992, and signed
by The United States in New York, June 4, 1993, S. Treaty Doc. 20, 103d Cong.,
1 s t Sess. (1993).
108. D.G. SCALISE, D. NUGENT, id., p. 111. But see C.R. MCMANIS, loc. cit.,
note 104, p. 263, challenging the attitude of "reading demons" into the text of article
16 : "[A]ny country that interprets Article 16 as requiring involuntary transfer of
technology must be prepared for the counter-argument that the similar language in
Article 15 requires involuntary transfer of genetic resources, a result no source
country would happily accept", and the same author, quoting D. DUMANOSKI, "U.S. is
Isolated in Opposing Biodiversity Treaty", Boston Globe, June 6,1992, p. 4, quoted in
R.L. MARGULIES, "Protecting Biodiversity : Recognizing International Intellectual
Property Rights in Plant Genetic Resources", (1993) 14 Mich. J. Int'l L., p. 322,
p. 337. See also K. BOSSELMANN, loc. cit., note 26, p. 139, describing article 16 as "the
mirror opposite of Article 15 in that it attempts to define access to technology for
LDCs [less developed countries] in the same way as Article 15 attempts to define
access to genetic resources for DCs [developed countries]". In light of this ambiguity,
it can rightly be argued that the rights provided for in the CBD in favor of developing
countries, are difficult to enforce.
109. CBD, art. 7(j).
110. See supra, text accompanying note 43.
B A D EMBOLI International Legal Regime for Biotechnology 317
Date, "[t]he Biodiversity Convention creates IPR in tradi-

tional knowledge and urges unprecedented compensation and
knowledge-sharing".111 Again, such an optimism raises the
question of the difficulty in protecting local communities IPR
under conventional standards, especially when such rights
refer to communal ownership.112 This is where conflicts start
arising between the CBD and the TRIPS Agreement.
III. ADDRESSING CONFLICTS BETWEEN THE INTERNATIONAL

AGREEMENTS : Is THERE ANY WAY OUT?
As discussed previously, plant varieties are not excluded

from protection under the TRIPS Agreement. To this effect,
Members are required to "provide for the protection of plant
varieties either by an effective sui generis system or by any
combination thereof',113 to make sure that minimum stan-
dards of IPR are catered to. 114 But, even though no specific
reference is made to the UPOV Convention therein, the
111. V. DATE, "Global 'Development' and its Environmental Ramifications —

The Interlinking of Ecologically Sustainable Development and Intellectual Property
Rights", (1997) 27 Golden Gate U. L. Rev., pp. 631-673, p. 662.
112. Two Australien copyright cases discussed by M. BLAKENEY illustrate this
problem, loc. cit., note 47, pp. 299-300. In Yumbulul v. Reserve Bank of Australia,
(1991) 2 I.P.R. 481, representatives of a clan named Galpu, failed to prevent the
Reserved Bank of Australia from reproducing the design of a Morning Star Pole on a
commemorative banknote, considered by the clan members as offensive. The trial
judge rejected the argument and held that "the artist who had created the pole had
successfully disposed of his intellectual property rights in it through a legally
binding assignment", see id., p. 299. In Milpurrurru v. Indofurn Ptg Ltd, (1995) 91
CCH A.I.P.C. 39,051, the court held that the reproduction of Aboriginal artists'
designs on carpets was a breach of copyright. But, damages could not be computed so
as to include dead members of the clan, since, said the court, "the statutory remedies
do not recognise the infringement of ownership rights of the kind which reside under
Aboriginal law in the traditional owners of the dreaming stories", id., p. 300.
114. It is true, as McCabe notes, that "[olne reason the TRIPS Agreement was
enacted, [...] was in recognition of the difficulty of negotiating worldwide patent pro-
tection through unilateral, bilateral, and multilateral agreements", K.W. MCCABE,
loc. cit., note 13, p. 63, referring to P. KATZENBERG, A. KuR, "TRIPS and Intellectual
Property", in F-K. BEIER, G. SCHRICKER (eds.), From GATT to TRIPS — The Agree-
ment on Trade-Related Aspects of Intellectual Property Rights, (1996), pp. 1-7 [com-
plete reference omitted in the citation]. Nevertheless, it seems that this objective did
not arguably materialize itself far beyond setting minimum standards of IPR.
R.L. GANA, loc. cit., note 31, p. 757, arguing that "[t]he function of the TRIPS Agree-
ment is not to create a worldwide agreement on patent laws".
controversial expression "effective sui generis system" has

been widely interpreted by many as limiting developing
countries' choice of a system of protection to one that is
already internationally available. 115
In such an interpretation, the relationship between the
TRIPS Agreement and the UPOV Convention seems to be
taken for granted. And yet, this can stand only if it is ascer-
tained that the UPOV Convention is likely to meet the goals
of developing countries. Moreover, even if it is suggested that
nations from the South are free to design a system of their
own, provided that it be "effective", conflicts remain possible.
In fact, the TRIPS Agreement does not define what is an
"effective" system. So, to what extent are the UPOV Conven-
tion, the TRIPS Agreement and the CBD likely to conflict
regarding biotechnology patenting? What options are worth
exploring in an attempt to reconcile the respective interests of
the parties?
A. WHERE THE AGREEMENTS CONFLICT
Following roughly the same pattern developed in the pre-

vious analysis, this subsection starts by comparing the UPOV
Convention vis-à-vis the TRIPS Agreement and the CBD, then
focusses on the relationship between these latter. Compared
to the TRIPS Agreement, the UPOV Convention can be criti-
cized for leading to results that counter the objective of free
trade, by imposing non-tariff barriers and anti-competitive
practices. 116 It further appears more objectionable when com-
pared to the CBD. To be sure, drawbacks seem to derive from
the fact that the UPOV Convention narrows farmers' rights as
115. K.W. McCABE, id., p. 58, discussing the UPOV Convention as a model sui
generis legal regime. See also M. CORREA, "New Standards", note 87, p. 329 arguing
that "[t]he reference to a sui generis regime naturally suggests the breeders's rights
regime, as developed within UPOV [...]". Adding, nevertheless, that "the possibility
is open to combine the patent system with the breeders's rights regime".
116. To give two examples cited by Gaia Foundation & Grain, strawberry
plants from Argentina were barred access to Europe by a US breeder "because they
would compete with plants produced in Europe under the U.S. licence". As concerns
anti-competitive practices, "sugar cane breeders in Latin Americ[al protect their
varieties in neighbouring countries to prevent their exploitation there, and thereby
protect their own exports", GAIA FOUNDATION & GRAIN, loc. cit., note 61, Part. 4.1.
discussed earlier. 117 Farmers' right to save the seed, for

instance, is consonant with the objective of conservation of
biological diversity in the CBD. This objective, according to
some authors, is particularly weakened by the fact that the
UPOV Convention provides a patent-like protection. While
this conforms with the TRIPS Agreement, opponents argue
that "[t]he privatization of patented genetic resources acceler-
ates the trend toward monocultural cropping".118
However, another view contends that "creation of new
plant varieties by definition increases the actual diversity of
species, and if genetic barriers can be eliminated through
genetic engineering, there will arguably be an increase of
botanical diversity as well". 119 Following this trend, the
UPOV Convention would still be a good option for developing
countries for two reasons : its field of application has been
extended to "the entire kingdom [of plants] and not just spe-
cies of interest to individual countries" and to "newly discov-
ered as well as newly bred varieties".120 Looking at the issue
this way, developing countries would enjoy "competitive oppor-
tunities" and, at the same time, contribute to the increase of
biological diversity.121 In any event, this view, which might
certainly be appealing to commercial breeders in developing
countries, leaves unresolved the question of recognition of the
rights of indigenous communities. While the CBD is quite
explicit on this point, the UPOV Convention just as the TRIPS
Agreement, remains silent.
With regards to the relationship between the TRIPS
Agreement and the CBD, there are three possible areas of con-
flict : the principle of national sovereignty, the recognition of
indigenous knowledge, and the acknowledgement of community
rights. Firstly, the principle of national sovereignty established
by the CBD, can be understood either as allowing developing
117. Supra, notes 66-67 and accompanying text.

118. M. RITCHIE, K. DAWKINS, M. VALLIANATOS, "Intellectual Property Rights
and Biodiversity : The Industrialization of Natural Resources and Traditional
Knowledge", (1996) 11 St John's J. Legal Comment, pp. 431-453, p. 446.
119. C.R. McMANlS, loc. cit., note 105, p. 276.
120. Ibid.
121. Ibid.
countries to stop bio-piracy, very common in the past, 122 or as

enabling them to enact legislation that excludes plant varieties
from patentability 123 . In this way, the CBD would clash with
the TRIPS requirement of biotechnology patenting.
Secondly, the CBD recognizes indigenous knowledge,
which includes "innovations and practices", 124 as well as its
contribution to the conservation and sustainable use of biolog-
ical diversity. The problem is that, in light of this contribution,
the CBD imposes on Contracting parties an obligation that has
no equivalent in the TRIPS Agreement : to share the benefits
of biological inventions. The TRIPS Agreement, instead, allows
patents "in all fields of technology" without compensation.125
At any rate, if it is true that Article 7(j) of the CBD cre-
ates communal IPR as discussed previously, there is no need
to insist that this is at odds with the TRIPS Agreement.
Should indigenous communities, where "the knowledge is
held by communities instead of just a single owner", claim
their share for providing the "novel" information, such claims
are irreconcilable with the individualistic view that prevails
in the international patent system. 126 However, it might be
possible to address these discrepancies. We will now explore
some significant options.
B. TRENDS AND PERSPECTIVES
Groups involved in the debate concerning the agree-

ments at issue are many; as are suggestions put forward so
that countries privy to these agreements can fulfil their obli-
122. One example is that some years back, Equador and Brazil tried, in vain,
to prevent the exportation of Chinchona (from which quinine is derived) and rubber.
See N.D. HAMILTON, loc. cit., note 1, p. 627, quoting H. HOBHOUSE, Seeds of Change :
Five Plants Transformed Mankind, (1985) and A. SMITH, Explorers of the Amazon,
(1990), pp. 251-284 [complete reference omitted in the citation].
123. Infra, notes 128-130 and accompanying text.
124. CBD, art. 7(j).
125. GAIA FOUNDATION & GRAIN, "TRIPS versus CBD. Conflicts Between the
WTO Regime of Intellectual Property Rights and Sustainable Biodiversity Manage-
ment", Global Trade and Biodiversity in Conflict, N° 1, (1998), (visited Dec. 22,1999)
<http://www.grain.org/publications/gtbc/issuel.htm>.
126. V. TEJERA, "Tripping Over Property Rights : Is it Possible to Reconcile the
Convention on Biological Diversity with Article 27 of the TRIPS Agreement?*, (1999)
33 New Eng. L. Rev., p. 967, p. 984.
gâtions. All in all, three options seem consistent with what

we have discussed in this paper : sui generis systems of pro-
tection, contractual arrangements at a bilateral level, and the
amendment of the TRIPS Agreement. The latter's require-
ment for a sui generis system of protection has had the effect
of almost doubling membership in the UPOV system. For
example, from January 1, 1994 to June 29, 1999 twenty new
members have joined, which brings the total to 44 States. 127
In any case, the sui generis option can also mean
freedom of choice. India took the lead in 1997 by drawing up a
draft legislation "to protect its biological resources from being
exploited by foreigners without sharing the benefits with
local people" and by setting up the National Biodiversity
Authority (NBA) to implement the legislation, 128 but, only to
meet strong opposition from the United States Govern-
ment. 1 2 9 So far, most developing countries seem to have
resisted the pressure as well, and many non-UPOV sui gen-
eris systems of protection are being drafted. 130 They aim to
promote farmers' rights, to preserve local community rights,
and to set up conditions for patentable matter in a way that
serves local interests.
This option is more in line with the CBD, and actually, it
is an attempt to fill the gap left by the TRIPS Agreement. As
a result, some critics question its efficacy, since they think
that it "tends to slow and even to block the flow of trade
between nations". 131 In the second place, are contractual
arrangements. Their possible justification is that "[t]he Biodi-
versity Convention provides the framework for the develop-
ment of minimum standards for national regulation of
transactions involving both the public and the private
127. States Party to the International Convention for the Protection of New
Varieties of Plants. Status on June 29, 1999, (visited Dec. 22, 1999) <http://
www.upov.org/eng/ratif/index.htm>.
128. K.S. JAYARAMAN, "India Drafts Law to Protects Bioresources", (1997) 390
Nature, p. 108.
129. V. TEJERA, loc. cit., note 126, p. 981, discussing India's resistence to comply
with the WTO's ruling.
130. GAIA FOUNDATION & GRAIN, "Beyond UPOV. Examples of developing coun-
tries preparing non-UPOV sui generis plant variety protection schemes for compli-
ance with TRIPS", July 1999, (visited Dec. 22, 1999) <http://www.grain.org/
publications/reports/nonupo v. htm>.
131. V. TEJERA, loc. cit., note 126, p. 982.
sector".132 In fact, article 7(j) requires, for such dealings, "the

approval and involvement of the holders of [...] knowledge,
innovations and practices". 133 In practice, biological pros-
pecting contracts, referred to as "gene-hunting", have been
taking place between governmental or non-governmental
entities located in the South and pharmaceutical or other
research bodies based in the North. The former provide sam-
ples which will be analysed for possible applications in medi-
cine, agriculture and industry, in exchange of royalties, and
conservation facilities or potential commercial benefits. 134
This option has been extensively encouraged by many
commentators. 135 Despite a number of prospective advan-
tages, 136 this solution poses first of all the question of devel-
oping countries' capacity to handle the hurdles and costs of
possible action against multinational firms for violation of
their rights resulting from screening contracts. 137 Then, the
right to sell national resources is questioned by some environ-
mental groups, for example, as well as some parliaments that
consider biodiversity as part of the "national patrimony". 138
Another concern is that biological screening can turn into bio-
piracy, given the degree of opportunism. As Tejera asserts,
"[contractual relations between individual tribes will only
succeed under a structured international trading system". 139
132. V. DATE, loc. cit., note 111, p. 666.

133. CBD, art. 7(j).
134. The well-publicized example is the agreement reached in 1991 between
Costa Rica's Institute Nacional de Biodiversidad (INBio) and Mereck & Company,
Ltd (Merek), a pharmaceutical firm based in the United States. Under this contract,
INBio agreed to provide Merek with chemical extracts from wild plants, insects and
microorganisms, "in exchange for a renewable two-year research and sampling
budget of $1,135,000, and royalties on any resulting commercial profits",
C.R. McMANlS, loc. cit., note 105, p. 270. For more examples and further discussion
of such arrangements, see ID., pp. 271-275; see also N.D. HAMILTON, loc. cit., note 1,
pp. 628-630.
135. D.G. SCALISE, D. NUGENT, loc. cit., note 52, p. 118. See also R.A. SEDJO,
loc. cit., note 41, p. 209; V. DATE, loc. cit., note 111, p. 669.
136. To name only a few, this solution appears sustainable because it is pre-
mised on contract rather than IPR. Then, it provides an incentive for developing coun-
tries to conserve genetic resources. And finally, it fosters equity. See K. BOSSELMANN,
loc. cit., note 26, p. 142, discussing the advantages of market solutions.
137. Id., p. 143.
The last option would be to amend the TRIPS Agreement

so as to eliminate its conflicts with the CBD. First, it is con-
sistent with the members' desire to review the controversial
provision of Article 27 as stated in the TRIPS Agreement
itself.140 In principle, possibilities for such an amendment
range from defining the term sui generis,U1 repealing Article
27.3 (b), 142 further suspending its implementation by devel-
oping countries, 143 to incorporating farmers' and local com-
munity rights 144 or establishing for such rights a new system
of protection. 145 Depending on the direction to be taken,
amendment looks like the best option for developing coun-
tries. It would not only highlight the extent to which both the
TRIPS Agreement and the CBD are legally binding without
140. See TRIPS Agreement, art. 27.3(b). The procedure is established in

article 71, which enables the Council established under article 68, to "undertake
reviews in the light of any relevant new developments which might warrant modifi-
cation or amendment of this Agreement". But the Council may need to refer to the
Ministerial Conference, art. 71.2. See also K.W. MCCABE, loc. cit., note 13, p. 63, com-
menting on article 71. It should be mentioned that the 3 r d WTO Ministerial Confer-
ence, which started on 30 November 1999, in Seattle, ended inconclusively on
3 December 1999. At the time of writing this paper, the discussion has not been
rescheduled yet.
141. Depending on the definition of this term, developing countries might
want to oppose a clear reference to the UPOVs standards of IPR, or a requirement to
join the UPOV Convention. See GAIA FOUNDATION & GRAIN, "TRIPS versus Biodiver-
sity : What to do with the 1999 Review of Article 27.3(b)", (1999), (visited Dec. 22,
1999) <http://www.grain.org/publications/reports/TRIPSmay99.htm>. But see K.W.
MCCABE, loc. cit., note 13, p. 60, suggesting that "[although the 1991 UPOV Conven-
tion does not provide the level of protection that patents do, it may provide a common
platform acceptable to both sides of this issue".
142. This would be the worse solution for developing countries. Beyond the
appearance that plant varieties would cease to be referred to expressly, it actually
implies the removal of the exception created. In such a case, plant varieties would
fall within the ambit of section 27.1, which established patentability "in all fields of
technology". See supra, notes 77.78 and accompanying text. This explains why
transnational corporations have been urging the United States to lobby for the dele-
tion of the exception that applies to plant varieties. See K.W. MCCABE, loc. cit.,
note 13, pp. 57-58.
143. GAIA FOUNDATION & GRAIN, loc. cit., note 141.
145. Preparations for the 1999 Ministerial Conference : Proposal on Protec-
tion of the Intellectual Property Rights Relating to the Traditional Knowledge of
Local and Indigenous Communities. Communication from Bolivia, Colombia,
Ecuador, Nicaragua, and Peru, WT/GC/W/362 (Oct. 12, 1999) (proposing the estab-
lishment of a multilateral legal framework that will grant effective protection to tra-
ditional knowledge).
colliding with each other, 146 but, in practice, it would bring

clarity vis-à-vis the UPOV Convention and predictability as
regards any measure the parties might wish to take.
CONCLUSION
Biotechnology patenting is a very complex and contro-

versial issue. In the perspective we have adopted here, this is
due to the fact that it opposes gene-endowed, but technologi-
cally deprived countries from the South, to gene-hunting, but
technologically rich nations from the North. Moreover, this
raises serious questions as to the ownership of genetic raw
matériels, the protection of its derivatives, and sharing of the
benefits.
As a result, the international intellectual property law in
its recent developments, fails to address these issues harmo-
niously. It tends, instead, to keep pace with advancement in
the biotechnology industry. For this reason, the UPOV system
has been reinforced to provide patent-like protection to com-
mercial breeders. This situation seems to leave traditional
breeders behing, not just because farmers' privileges have
been deleted, but also because the new standards of protec-
tion hardly apply to landraces and traditional knowledge.
As for the TRIPS Agreement, it is less concerned, in its
objectives, with the need to harmonize IPR than by the desire
to set up minimum intellectual property standards, so that
greater protection can be afforded to industrial forces. Thus,
it remains clear that plant varieties are patentable subject
matter. The language in the TRIPS Agreement gives devel-
oped countries a better bargaining position, because if they
cannot achieve biotechnology patenting under this regime,
they can push toward the UPOV Convention. Developing
countries on their side, have a strong hold on the CBD, which
takes into account the rights of local communities, despite the
ambiguity and vagueness of its wording.
146. But see M. HALEW00D, loc. cit., note 76, pp. 280-281, stating that if these
agreements deal with the same subject matter, "then, based on the Vienna Conven-
tion, TRIPS would prevail over the CBD, and parties to both agreements would be
obliged to comply with TRIPS where the two agreements applied equally to any
given legal initiative".
Therefore, the conflicts between these agreements stem

from differences in their respective objectives. Consequently,
this compels developing countries, for example, to perceive
the issue from different angles all at the same time. More-
over, as providers of genetic materials, they fear bio-piracy
believing that these resources have the potential to develop
their economy; while, as consumers of protected technology,
they fear being denied access to accessible markets as well as
conservation consideration, in terms of local industry. Thus, it
goes without saying that the way from fear to "fair dealing"
passes through the harmonization of the TRIPS Agreement
and the CBD. At any rate, whether the parties are willing to
bridge the gap between them remains to be seen.
Jean-Faustin Badimboli
50, rue Jeanne d'Arc
HULL (Québec)
J8Y 2H4
Tél. : (819) 775-9652
Courriel : faustinb@hotmail.com

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Revue générale de droit

The International Legal Regime for Biotechnology Patenting: an

Volume 31, Number 2, 2001 Article abstract

Cite this article

This article is disseminated and preserved by Érudit.

The International Legal Regime

JEAN-FAUSTIN BADIMBOLI ATIBASAY*

The development of Uessor de la biotechnologie

* An earlier draft of this paper was written in partial fulfilment of a Master's

(2001) 31 R.G.D. 291-326

protection in developing droits des inventeurs dans les

I. Social Economie Implications of Biological Innovations 295

II. The Legal Impact of Recent International Agreements 305

III. Addressing Conflicts between the International Agreements : Is

Biotechnology holds high prospects of improvement in

then leads us to examine the nature and legal foundations of

I. SOCIAL ECONOMIC IMPLICATIONS

The debate over biological innovations involves so many

issue from what is not, 10 it seems difficult to ignore the

A. WHY LINK PATENT PROTECTION

In any event, three assumptions seem to lay the founda-

innovators from reaping investment returns, 17 as well as to

countries' concern for a free flow of trade by means of patent

B. CONCERNS OF INVENTORS FOR A STRONG PATENT

To begin with, the biotechnology patenting issue

24. Id., preamble.

It is little wonder that the articulation of political and

28. J. NOGUÉS, "Patents and Pharmaceutical Drugs : Understanding Pres-

exclude drug products from patentability 3 2 Likewise, it is

32. R. WEISSMAN, "A Long, Strange TRIPS: The Pharmaceutical Industry

simply being imported. 37 However, the point of view voiced

C. THE NEED TO PROMOTE LOCAL INTERESTS

To say that biological resources are a common heritage

37. Under this alternative, if a pharmeceutical company, for example, sells

lines and mutants". 40 This meant that developing countries

40. According to article 2 of the FAO Undertaking, "plant genetic resources"

have a share in genetic innovations. Therefore, opponents

44. V. SHIVA, id., p. 54 : "[G]enetic engineering and biotechnology only relocate

disclosure in order to facilitate public use of innovations

II. T H E LEGAL IMPACT OF RECENT

The above sketch of the views of the interested parties

48. M. BLAKENEY, id., p. 299.

suspicious about its initiatives, 5 2 precisely in light of its

A, PLANT PATENTS IN THE U P O V CONVENTION

Created in 1961, the UPOV Convention was conceived to

52. D.G. SCALISE, D. NUGENT, "International Intellectual Property Protec-

expense of farmers' rights. 61 A survey of this system reveals

rights have been reinforced,67 while the grant of exemptions

67. UPOV Convention (1991), art. 14.

The Uruguay round of negotiations has been described as

and the conditions for patentability, namely Article 27. We

77. TRIPS Agreement, art. 27.1.

must be assessed against the conditions laid down for its

82. T.G. ACKERMANN, "Dis'ordre'ly Loopholes: TRIPS Patent Protection,

will in effect be excluded remains disputable. For example,

the expansion of the scope of intellectual property in the field

The preceding review of the TRIPS Agreement points to